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6.19.2015

What We Know (so far) About IP according to TPP

The Trans Pacific Partnership agreement currently being negotiated has been a contentious subjects for many progressives and liberals in the Democratic party and across the economic, political and business spectrum. For better or worse, there is little that we know about the provisions contained. Nonetheless, I am curious as to what is in there for intellectual property. Amidst the criticism I have heard and read, a flashpoint of contention is how much of a boon TPP will be for media conglomerates in Hollywood. As a lawyer who works with filmmakers, I am concerned about the many ways filmmaking has become less and less lucrative and more and more risky an artform to engage in. A large reason for that is piracy. I'm torn because on the one hand I applaud strong attempts to curb piracy and the outright theft of copyrights, patents and trademarks across industries, I also don't wish to see creators of art, comedy, satire and inventions be stifled from transforming what is already out there to create something better, enlightening or entertaining.. But what exactly do the provisions do and who truly benefits?According to Wikipedia:

The Trans-Pacific Partnership (TPP) is a multilateralFree Trade Agreement under negotiation. The Advanced Intellectual Property Chapter for All 12 Nations with Negotiating Positions (August 30, 2013 consolidated bracketed negotiating text), was published by Wikileaks on 13 November 2013.[1] Previously, the US proposal for the chapter had been leaked by U.S. Congressman Darrell Issa (R-CA) in May 2012.[2] Other drafts available are from February 2011[3] and September 2011[4]- the latter focuses on patent.

The intellectual property provisions are a source of controversy, especially in terms of their effects on pharmaceutical patents and digital innovation.[5] TPP members agree that they will follow and expand upon the legal rights and obligations delineated in the World Trade OrganizationAgreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), and the agreement's discussions thus far have included trademark, geographical indication, copyright and related rights, patents, trade secrets, genetic resources, and traditional knowledge.[6] Furthermore, statements from former US officials indicate that the agreement is intended to “set the bar” for future agreements.[7]

The language of the TPP borrows heavily from the Anti-Counterfeiting Trade Agreement (ACTA) (the most recent multilateral agreement involving copyright).[8]The most recent intellectual property agreement that applies to all TPP members is TRIPS.

Article 2: Trademark

The Trademark provisions of the TPP contain similarities to current United States trademark law and in several instances call for a higher level of protection than in the TRIPS agreement.[9]

Scope of Trademark: Article 2.1 of the TPP states that “No Party may require, as a condition of registration, that a sign be visually perceptible, nor may a Party deny registration of a trademark solely on the grounds that the sign of which it is composed is a sound or a scent.”

This mirrors the scope of trademark in the Lanham Act. This places an obligation on TPP members to grant trademarks that they could reject under TRIPS, which allows a member to “require, as a condition of registration, that signs be visually perceptible.”[10] The language of this article also duplicates the wording of the trademark provision in the Korea-US Free Trade Agreement.[9]

Exclusive Use Rights: Article 2.4 provides the owner of a registered trademark the right to exclude third parties from using it in the course of trade. Furthermore, it states that they may also exclude those using “similar signs...for goods or services that are related to those goods or services in respect of which the owner's trademark is registered.”

The Lanham Act states that non-rights-holders may not “use in commerce any... colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive” (emphasis added). The difference in these two standards is unclear. Article 2.4 of the TPP has very similar language to the corresponding provision of TRIPS, however TRIPS allows the trademark owner to prevent others from using the mark “in the course of trade identical or similar signs for goods or services which are identical or similar.”[10] It appears that the TPP language affords greater protection to trademarks, but this is not yet clear.[9]

Well-Known Marks: Article 6bis of the Berne Convention refers to well-known marks as “a mark considered by the competent authority of the country of registration or use to be well known.” Such marks are to be protected outside of their home country.[11] Article 2.6 of the TPP states that a party may not require registration of a trademark for it to be considered well-known. It states that parties may not deny relief based solely on “the lack of: (a) a registration; (b) inclusion on a list of well-known marks; or (c) prior recognition of the mark as well-known.” Furthermore, Footnote 5, found in Article 2.7 states that when determining whether a mark is well-known, “no Party shall require that the reputation of the trademark extend beyond the sector of the public that normally deals with the relevant goods or services.”

US law does not have a legislative standard for determining whether something is a “well-known mark.”[12] However, the TPP's language deviates from the TRIPS standard. According to TRIPS Article 16.2, members must only take into account the “relevant sector of the public” - and may therefore go beyond it.[10]

The Treatment of Geographical Indications: Protection: Article 2.4 of the TPP provides that “geographical indications are eligible for protection as trademarks.” It defines geographical indications as “s indications that identify a good as originating in the territory of a Party, or a region or locality in that territory, where a given quality, reputation, or other characteristic of the good is essentially attributable to its geographical origin.” It further states in footnote 4 that “any sign or combination of signs” can be a geographical indicator.

The main effect of this provision is to subsume geographical indication protection into trademark law.[9] This marks a departure from TRIPS, which deals with geographical indications (GI) in an article separate from trademark (Article 22).

Geographical Indication vs Trademark: Article 2.15 of the TPP prohibits the use of a GI where it is “likely to cause confusion with a trademark.” Furthermore, Article 2.18 “defines a generic GI in a way that would allow one country's generic use of a term to defeat a claim of a GI that is protected in another country.”[9]Lastly, Article 2.22 allows the registration of trademarks “reference a geographical area even though it is not the true place of origin.”[9]In the United States, geographical indications are treated in a manner almost identical with trademark law, so this merging of doctrines will have little effect.[13]However, the language of the TPP deviates from that of TRIPS. Where the TPP focuses on “confusion with a trademark,” TRIPS regulation of GIs requires members to enable the prevention of “the use of any means in the designation or presentation of a good that indicates or suggests that the good in question originates in a geographical area other than the true place of origin in a manner which misleads the public as to the geographical origin of the good.”[10]

Article 4: Copyright and Related Rights

Temporary Copies: Article 4.1 provides that rights holders may “authorize or prohibit all reproductions of their works, performances, and phonograms, in any manner or form, permanent or temporary (including temporary storage in electronic form).”

The Digital Millennium Copyright Act (codified in Title 17 of the United States Code) does not provide rights over temporary copies. The statute's definition of “copies” as “material objects” that are fixed (i.e., “sufficiently permanent…for a period of more than transitory duration”[14]) indicates that temporary storage of copyrighted material would not infringe.[15] In addition, 17 USC § 512(b)(1) specifically provides that internet service providers are not liable for infringement “by reason of the intermediate and temporary storage of material….” There is some debate in US federal courts regarding liability for temporary copies, beginning withMAI Systems Corp. v. Peak Computer, Inc. which held that temporary copies stored on RAM may infringe.[16] Recently, however, several Courts of Appeals have found that qualitatively transitory copies do not violate the DMCA.[17] ACTA does not define copyright rights, and TRIPS references the Berne Convention, which contains no language regarding temporary copies.In March 2013, the United States Supreme Court decided in Kirtsaeng v. John_Wiley & Sons, Inc. that the first-sale doctrine applies to works manufactured outside the United States, establishing the legality of parallel imports.[18] Likewise, New Zealand lifted a ban on parallel importation in 1998 and has found that the decision has not had a negative impact on New Zealand’s creative sector.[19] TRIPS provides that “nothing in this Agreement shall be used to address the issue of the exhaustion of intellectual property rights,” effectively allowing each country to determine their own exhaustion regime.[20] ACTA does not address parallel imports.

Copyright Terms: Article 4.3 provides that copyright terms shall be “not less than the life of the author and 70 years after the author’s death.” TRIPS, on the other hand, sets the term at 50 years. In addition, 4.3 does not provide a presumption for the author’s death, unlike 17 USC § 302(e). ACTA does not address copyright duration.

Anti-Circumvention: Article 4.9 is similar to U.S. law on anti-circumvention (17 USC § 1201-04).[15] However, there are some differences between Art. 4.9, U.S. law and other agreements. ACTA[21] and KORUS,[22] for example, require knowledge that one is circumventing a technology measure,[23] while Art. 4.9(a)(i) and U.S. law[24] do not have knowledge requirements.

Art. 4.9(a)(ii)(C) provides that prohibited devices and services include those that “enabl[e] or facilitat[e]” circumvention, whereas the DMCA[25] and ACTA only prohibit devices and services that have “the purpose of circumventing.”[26]

Article 4.9(c) provides that any violation under Art. 4.9 is a “separate cause of action, independent of any infringement that might occur under…copyright.” There is a Circuit Court of Appeals split on this issue between the 9th Circuit[27] – holding the view reflected in Art. 4.9(c), that is, that you may be guilty of circumvention even if you do not violate a copyright – and the 2nd Circuit, which has held that an underlying copyright must actually be infringed to trigger circumvention liability (the “infringement nexus requirement”).[28] TRIPS does not address anti-circumvention.

Rights Management Information: 4.10(a)(iii) provides for civil liability if one “distributes, imports for distribution, broadcasts, communicates or makes available to the public copies of works” with removed RMI. This language is identical to ACTA article 27.2(b). It is broader than U.S. law, which imposes liability only for distribution, importing for distribution, or public performance.[29]

Article 5: Making Available

Distribution – Making Available: Article 5 provides that authors have “the exclusive right to authorize or prohibit the communication…of their works,…including making available…their works in such a way that…the public may access these works from a place and at a time individually chosen by them.” U.S. law, on the other hand, only provides the following rights: sale, transfer of ownership, rental, lease or lending.[30] There is a U.S. District Court split on whether § 106(3) includes a “making available” right absent actual transfer of the work (e.g. hosting a music video).[31] The “making available” right has been advocated by the RIAA in cases like Elektra v. Baker,[32] Atlantic v. Howell,[33] and Capitol v. Thomas.[34] In all three cases, the court either declined to address the argument[35] or found that § 106(3) was not violated unless the alleged infringer actually distributed the work.[36] The Commercial Felony Streaming Act (S.978) criminalize streaming for financial benefit,[37] arguably establishing at least a narrow "making available" right.[38]

Article 8: Patents

Definition: Article 8.1 sets forth the availability of patents, and provides that “patents shall be available for any new forms, uses, or methods of using a known product; and [these] may satisfy the criteria for patentability, even if such invention does not result in the enhancement of the known efficacy of the product.”

TRIPS, on the other hand, specifies that patents are available “provided that [the invention] [is] new, involve[s] an inventive step and [is] capable of industrial application.”[39] Flynn et al. note that Art. 8.1 is inconsistent with the laws of many TPP member countries, and may also directly target India.[40]

Disclosure: Article 8.10 provides disclosure of claimed invention requirements. It does not include, however, a requirement that the inventor indicate the “best mode” for carrying out the invention. The “best mode” requirement is included in both U.S. law[41] and TRIPS (Art. 29). The purpose of the “best mode” requirement is to ensure full disclosure, such that the inventor may not “disclose only what he knows to be his second-best embodiment, retaining the best for himself.”[42]

Article 12: Civil Enforcement

Damages: Article 12.4 mandates the creation of a system of statutory damages and specifies that damages shall be “sufficiently high to constitute a deterrent to future infringements.”

ACTA does not require that a member use statutory damages, but allows it as an enforcement option.[43] TRIPS allows statutory damages to be used where they exist, but does not require their creation.[44] US law does not include a deterrence requirement, and only allows increased damages for willful violations.[45]

Destruction: Article 12.7 sets destruction of pirated or counterfeit goods as the norm. It also specifies that “materials and implements that have been used in the manufacture or creation of such pirated or counterfeit goods be…promptly destroyed”. This expands upon both U.S. law and TRIPS: U.S. law provides a specific list of implements that may be destroyed (molds, matrices, etc.)[46] and TRIPS narrows the materials that may be destroyed to those the “predominant use of which has been in the creation of the infringing goods.”[47] In addition, TRIPS does not establish destruction of goods as the norm, but provides for destruction or disposing the good outside the channels of commerce.[47]

Article 13: Provisional Measures

Preliminary Injunctions: Article 13 sets forth procedures for granting a preliminary injunctions. Article 13.1 provides that preliminary injunctions should be granted “expeditiously” and “except in exceptional cases” requests should be executed “within ten days”. This differs from U.S. law, TRIPS and ACTA, none of which have explicit time requirements. ACTA, for example, provides that authorities should have the authority to “make decision without undue delay”.[48] Additionally, TRIPS and ACTA both specify that preliminary injunctions are appropriate in cases where “delay is likely to cause irreparable harm to the right holder”.[49] Art. 13.1, on the other hand, does not seem to require irreparable harm to the holder.

Article 13.2 sets out the standards an applicant for a preliminary injunction must satisfy, stating that applicants may be required to provide “any reasonably available evidence in order to satisfy [the authorities] with a sufficient degree of certainty that the applicant’s right is being infringed.” U.S. law, on the other hand, has much more stringent requirements for preliminary injunctions, requiring a showing that irreparable harm will be likely, balancing the harms of an injunction, and considering the public interest.[50] As noted above, both ACTA and TRIPS contain identical “irreparable harm” language, which corresponds to the U.S. “irreparable injury” requirement.

Article 15: Criminal Enforcement

Willful: Article 15.1 provides for criminal penalties in cases of willful copyright infringement on a commercial scale. It notes that willful copyright infringement on a commercial scale includes “significant willful copyright or related rights infringements that have no direct or indirect motivation of financial gain” in addition to infringement with financial gain as the motive.

This differs from ACTA, TRIPS and U.S. law. ACTA specifies that willful infringement on a commercial scale includes that motivated by financial gain, but says nothing about infringement lacking such financial motives.[51] TRIPS does not specify what qualifies as willful copyright on a commercial scale, but the US-China WTO case decided in 2010 determines commercial scale by looking at the typical or usual commercial activity with respect to the product and specific market involved.[52] U.S. law contains a financial gain motivation requirement and also may find infringement without financial gain, but where the goods distributed or reproduced would retail for $1,000 or more.[53]

Criticisms

Alterations to US lawsMany of the TPP’s IP sections reflect current US law; however, some sections preclude judicial resolution of court splits and in other instances expand beyond current US law. In trademarks the TPP does very little to change existing US law. However, the TPP could change US copyright law in several areas. For example, the TPP extends rights to copyright holders over temporary copies,[164] whereas US law specifies that copies must be “fixed”;[165] this may also impact the ISP safe harbor for cached copies of infringing works.[165] The TPP also contains language that would “resolve” court splits in favor of copyright holders on the issues of: parallel imports,[166] whether circumvention liability requires an underlying copyright infringement,[167] and whether authors have a “making available” right.[168]The TPP’s “standards” for preliminary injunctions are quite different from US law, including a 10-day window in which a court must grant the injunction,[169] and no requirement that the right holder show likely irreparable harm. The TPP patent provision has been criticized primarily for its impacts on pharmaceuticals and medical devices,[170] but will likely also impact software and other technology. In particular, the TPP removes the requirement that an inventor disclose the “best mode” of the invention,[171] thus creating the possibility of inventors “retaining the best for [themselves].”[172]Electronic Frontier Foundation (EFF) have been highly critical of the chapter on intellectual property covering copyright, trademarks, and patents. In the US, this is likely to further entrench controversial aspects of US copyright law (such as the Digital Millennium Copyright Act) and restrict the ability of Congress to engage in domestic law reform to meet the evolving IP needs of American citizens and the innovative technology sector.[173]

Alteration to non-US laws

A major international criticism of the TPP is that it sets US intellectual property laws as the “norm” for all members.[174][173] TRIPS established the minimum intellectual property rights and enforcement provisions for WTO members.[175] ACTA has not been ratified,[176] but provides an example of the most recent multinational intellectual property agreement (for trademarks and copyright only) upon which many TPP provisions are based or expand.[citation needed]Standardization of copyright provisions by other signatories would require significant changes to other countries’ copyright laws. These, according to EFF, include obligations for countries to expand copyright terms, restrict fair use, adopt criminal sanctions for copyright infringement that is done without a commercial motivation (ex. file sharing of copyrighted digital media), place greater liability on Internet intermediaries, escalate protections for digital locks, create new threats for journalists and whistleblowers (due to vague text on the misuse of trade secrets),[173]

A group of artists, archivists, academics, and activists, have joined forces in Japan to call on their negotiators to oppose requirements in the TPP that would require their country to expand their copyright scope and length to match the United States' of copyright.[177]Ken Akamatsu, creator of Japanese manga seriesLove Hina and Mahou Sensei Negima!, expressed concern the agreement could decimate the derivative dōjinshi (self-published) works prevalent in Japan. Akamatsu argues that the TPP "would destroy derivative dōjinshi. And as a result, the power of the entire manga industry would also diminish." Kensaku Fukui, a lawyer and a Nihon University professor, expressed concerns that the TPP could allow companies to restrict or stop imports and exports of intellectual property, such as licensed merchandise. For example, IP holders could restrict or stop importers from shipping merchandise such as DVDs and other related goods related to an anime or manga property into one country to protect local distribution of licensed merchandise already in the country via local licensors.[178] At a NicoNicolive seminar called How Would TPP Change the Net and Copyrights? An In-Depth Examination: From Extending Copyright Terms to Changing the Law to Allow Unilateral Enforcement and Statutory Damages, artist Kazuhiko Hachiya warned that cosplay could also fall under the TPP, and such an agreement could give law enforcement officials broad interpretive authority in dictating how people could dress up. Critics also have derided the agreement could also harm Japanese culture, where some segments have developed through parody works.[179] Both the copyright term expansion and the non-complaint provision previously failed to pass in Japan because they were so controversial.[177]

Patents and cost of medicine

A number of United States Congresspeople,[180] including Senator Bernard Sanders[181] and Representatives Henry Waxman, Sander M. Levin, John Conyers,Jim McDermott,[182]John Lewis, Pete Stark, Charles B. Rangel, Earl Blumenauer, and Lloyd Doggett,[183] have expressed concerns about the effect the TPP requirements would have on access to medicine. In particular, they are concerned that the TPP focuses on protecting intellectual property to the detriment of efforts to provide access to affordable medicine in the developing world, particularly Vietnam, going against the foreign policy goals of the Obama administration and previous administrations.[180] Additionally, they worry that the TPP would not be flexible enough to accommodate existing non-discriminatory drug reimbursement programs and the diverse health systems of member countries.[183]

Opponents of the Trans-Pacific Partnership say US corporations are hoping to weaken Pharmac's ability to get inexpensive, generic medicines by forcing New Zealand to pay for brand name drugs.[184] Doctors and organisations like Medecins Sans Frontieres have also expressed concern.[185] The New Zealand Government denies the claims, Trade Negotiations Minister Tim Groser saying opponents of the deal are "fools" who are "trying to wreck this agreement".[186]

The Australian Public Health Association (PHAA) published a media release on 17 February 2014 that discussed the potential impact of the TPP on the health of Australia's population. A policy brief formulated through a collaboration between academics and non-government organisations (NGOs) was the basis of the media release, with the partnership continuing its Health Impact Assessment of the trade agreement at the time of the PHAA's statement. Michael Moore, the PHAA's CEO said, "The brief highlights the ways in which some of the expected economic gains from the TPPA may be undermined by poor health outcomes, and the economic costs associated with these poor health outcomes."[187]

On 29 January, former US Labor Secretary Robert Reich released an illustrating video explaining the TPP. He opposes it on grounds such as "delaying cheaper generic versions of drugs", and its provisions for international tribunals that can require corporations be paid "compensation for any lost profits found to result from a nation's regulations."[188]

I can't help but wonder if TPP's extra-strong IP provisions will eventually rebound and affect copyrights, trademarks and patents in the US that will have unintentional negative consequences for inventors and creatives in the US. What is more important? Providing incentives and protections for creatives to create or enriching society with more art, satire, cultural diversity and democratized technology.For more in-depth analysis:

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